The Complainant is The Commissioners for HM Revenue and Customs of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Demys Limited, United Kingdom.
The Respondent is WhoisGuard Protected WhoisGuard, Inc. of Panama City, Panama / Tim George of London, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2018. On October 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 17, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 18, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2018.
The Center appointed Jane Lambert as the sole panelist in this matter on November 21, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a is a non-ministerial department of the British Government responsible for collecting taxes, paying certain benefits and administering and enforcing the national minimum wage arrangements. It was formed by the merger of the Inland Revenue with Her Majesty’s Customs and Excise pursuant to the Commissioners for Revenue and Customs Act 2005.
On November 5, 2007, the Complainant applied successfully to register the letters HMRC in upper and lower case as a British trade mark for a wide range of goods and services in classes 9, 16, 35, 36, 41 and 45. The application was granted on March 28, 2008 and the mark was registered under registration number UK2471470. The Complainant has produced evidence suggesting that it enjoys a reputation or goodwill in relation to the above mentioned services by reference to the letters HMRC in the United Kingdom and that it could bring an action for passing off in that country against anyone carrying on business under the same or similar name or supplying goods or services under the same or similar mark.
Very little is known of the Respondent Tim George beyond the particulars provided by the Registrar. The Panel entered the address provided by the Registrar into Google Maps which recognized it as a genuine postal address and produced a photograph of a number of residential properties one of which is believed to be the address given by the Respondent.
The disputed domain name was registered on October 11, 2017 and resolves to a parking page apparently operated by the Registrar, Namecheap, with pay-per-click links labeled “Advice”, “Tax”, “pay”, “Scotland”, “HMRC Tax”, “Housing”, “Tax Calculator”, “HM” and “Calculator”. Upon clicking those links, the visitor is presented with a list of further links some of which appear to offer services related to the Complainant’s activities and others that do not. 5. Parties’ Contentions A. Complainant
The Complainant requests the transfer of the disputed domain name on the grounds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights, the Respondent has no rights or legitimate interests in the disputed domain name and the disputed domain name was registered and is being used in bad faith.
As to the first ground the Complainant points out that the disputed domain name differs from its registered trade mark only in the addition of the abbreviations “uk” and “gov” and the suffix “.com”. The initials “uk” are a common abbreviation for the “United Kingdom” and “gov” stands for “Government”. The combination of those abbreviations with the registered mark is likely to lead at least some members of the public to believe that the disputed domain name is connected with the Complainant or the British government.
The Complainant refers to section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which states that a complainant has only to make a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name in order for the evidential burden to pass to the respondent. In reliance on that section the Complainant states that it has found no evidence that the Respondent was ever commonly known as HMRC or HMRC-UKGOV. It is not a licensee of the Complainant and has no reason to believe that the Complainant acquiesces in its use of its marks or departmental name. The Complainant has found nothing to suggest that the Respondent owns any trade marks that incorporate or are similar or identical to the marks HMRC or HMRC-UKGOV. Further, the Complainant has found no evidence that the Respondent has ever traded or operated as HMRC or HMRC-UKGOV. None of the circumstances that might indicate that the Respondent has rights or legitimate interests in the disputed domain name seems to apply. The Complainant contends that it succeeds on the second ground.
In respect of the third ground the Complainant submits that the use of the disputed domain name as the URL for a page with sponsored links constitutes evidence of registration and use in bad faith. The Complainant also drew the Panel’s attention to many instances when similar domain names have been used for phishing and other improper purposes. It questions whether there can be any legitimate purpose for the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The agreement for the registration of the disputed domain name incorporates paragraph 4(a) of the Policy in the following terms:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.” A. Identical or Confusingly Similar
The Panel finds the first element to be present.
The Complainant is the registered proprietor of the British trade mark number UK2471470 under which the letters “HMRC” are registered for several classes of goods and services in classes 9, 16, 35, 36, 41 and 45. The Complainant’s trade mark is clearly recognizable within the disputed domain name. The disputed domain name differs from that letter mark only in the addition of the abbreviations “uk” and “gov” which stand for the United Kingdom and government and the suffix “.com”. The additional terms, “uk” and “gov”, as stated under section 1.8 of WIPO Overview 3.0, do not prevent a finding of confusing similarity under the first element. The disputed domain name is therefore confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel also finds the second element to be present.
Paragraph 4(c) of the Policy lists a number of circumstances which if found by the Panel to be proved might demonstrate that the Respondent has rights or legitimate interests to the disputed domain name for the purposes of paragraph 4(a)(ii). The Complainant has looked for evidence of such circumstances but has found none.
The Respondent has had an opportunity to produce evidence of the subsistence of rights or legitimate interests in the disputed domain name but has not taken advantage of that opportunity.
In the absence of any evidence that he has rights or legitimate interests in the disputed domain name the Panel concludes that the Respondent has none. C. Registered and Used in Bad Faith
Finally, the Panel finds the third element to be present.
Paragraph 4(b) of the Policy lists a number of circumstances which if found to be present shall be evidence of registration and use in bad faith. One of those circumstances is as follows:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The disputed domain name is being used for a web page that leads to a number of pay-per-click links. That is use of the disputed domain name to attract users to a website or other online location for commercial gain. As mentioned under paragraph B, the disputed domain name differs from that letter mark only in the addition of the abbreviations “uk” and “gov” which stand for the United Kingdom and Government and the suffix “.com”. Far from distinguishing the disputed domain name the insertion of those abbreviations reinforces the impression that that domain name is the URL for an official British government website. The Panel has already found the disputed domain name to be confusingly similar to the Complainant’s trade mark which satisfies the requirement of creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location.
The Panel concludes Paragraph 4(b)(iv) to present and that it is therefore evidence of registration and use in bad faith. As there is no evidence to the contrary or explanation to the contrary it follows that the third element is present.
That is enough to dispose of the Complaint. However, the Complainant has adduced considerable evidence of misuse of its name and mark by the registration of similar domain names in other instances which have been used for phishing and other improprieties and has argued that the disputed domain name was probably registered for some similar purpose. Although it is unnecessary to make a finding to that effect, the Panel acknowledges the weight of the Complainant’s evidence and the force off its argument and agrees that it is hard to imagine any proper purpose for the registration and use of the disputed domain name. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4 (i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Jane Lambert
Sole Panelist
Date: December 6, 2018
Full & Egal Universal Law Academy